The Software IP Report
Federal Circuit Provides a Lesson on How Not to Rebut an Obviousness Rejection
By Peter Keros
Categories: 35 U.S.C. § 112, 35 U.S.C. §§ 102, 103, The Software IP Report
Has the Federal Circuit made it more difficult to rebut obviousness rejections by demonstrating that the cited references teach away from the claimed invention? One way to show that references teach away from a claimed invention is to show that a combination of references alleged by the patent examiner would render the prior art inoperable or unsatisfactory for its intended purpose. Sometimes this argument is supported with a declaration from an inventor or other knowledgeable person. This argument, however, may be more difficult after Ex Parte Urbanski, No. 2015-1272 (Fed. Cir. Jan. 8. 2016), in which the Federal Circuit affirmed a PTAB decision rejecting all of the claims of U.S. Patent App. No. 11/170,614.
The ‘614 application is directed to a method of enzymatic hydrolysis of soy fiber for a reduced water holding capacity to use as a food additive. The representative claim (claim 43) specified (1) a range for a degree of hydrolysis, (2) a range for a reduction on water holding capacity, (3) a free simple sugar content below 1%, and (4) a mixing time of 60-120 minutes.
The Examiner rejected the representative claim under 35 U.S.C. § 103(a) over Gross (WO96/32852) in view of Wong (US 5508172). Both Gross and Wong disclose methods of enzymatic hydrolysis of dietary fibers. Gross teaches a method that converts fibers into gels, using a longer hydrolysis time (5-72 hours), and Wong teaches a method that produces a soy fiber product with better mouthfeel with a shorter hydrolysis time (100-240 minutes). The Examiner found that one of ordinary skill in the art would be able to use the method of Gross with a lower hydrolysis time to produce a soy fiber like that of Wong, and that modifying the method would result in the claimed water holding capacity and free simple sugar content.
Urbanski submitted a declaration during prosecution asserting that the claimed method would not form a stable gel as disclosed in Gross, and thus the fiber product would have been unsatisfactory for Gross’s intended purpose of forming stable gels. The Examiner and the PTAB found the argument and declaration unpersuasive, noting that losing the benefit of Gross while gaining the benefit of Wong did not outweigh the evidence of obviousness. Furthermore, the PTAB found that the reaction time and degree of hydrolysis were result-effective variables, adjustable in a predictable manner to produce a predicted water holding capacity and free simple sugar content, further implying obviousness.
The Federal Circuit reviewed the legal determinations de novo and the factual findings underlying those determinations for substantial evidence. While Urbanski argued that the declaration was not considered by the PTO or the PTAB, the Federal Circuit agreed with the PTO that substantial evidence supported the PTAB’s findings that reaction time and degree of hydrolysis were result-effective variables, i.e., varying the reaction time would have a predictable effect on the degree of hydrolysis. Thus, one of ordinary skill in the art would have been motivated to modify the Gross process in view of Wong to use a shorter reaction time to produce a product with the expected properties Urbanski tried to claim. Thus, the PTO established a prima facie case of obviousness.
The court further held that the prima facie case was not rebutted. Urbanski did not suggest or provide evidence that the claimed ranges were critical or produced a new and unexpected result compared to the prior art. The only evidence that Urbanski presented to rebut the examiner’s obviousness rejection was the assertion that the PTO and PTAB did not consider Urbanski’s declaration. However, the court was unpersuaded by the declaration and the argument that modifying the Gross process as taught by Wong would have produced a product inoperable for Gross’s intended purpose, and thus taught away from the claimed invention.
Urbanski relied on In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), which held that “if references taken in combination would produce a seemingly inoperative device…such references teach away from the combination and thus cannot serve as predicates for a prima facie case of obviousness.” 733 F.2d 900, 902 (Fed. Cir. 1984).
However, the court distinguished Gordon, noting that “Urbanski’s reliance…is misplaced.” Gordon reversed an obviousness rejection where a blood filter with an inlet and outlet on the bottom of the device was held obvious over a gasoline filter with the inlet and the outlet on the top of the device, noting that the gasoline filter would have been rendered inoperable for its intended purpose. Here, while Gross teaches the benefit of stable dispersions, Wong teaches other desirable properties, and one of ordinary skill in the art would have been motivated to pursue the desirable properties of Wong even at the expense of the benefits of Gross. That is, the modification would not have produced an inoperable process or dietary fiber product, just a product with properties different that those in the primary reference, Gross. Furthermore, Urbanski’s claims do not require Gross’s benefit, which the court held did not support the inoperability argument.
This case presents a common problem with obviousness rejections. Often, all of the claimed elements are present in the cited references, and the only avenue to overcome the rejection is to attack the reason to have combined the references. While the inoperability argument of Gordon can provide a strong rebuttal to an obviousness rejection, the Federal Circuit in the present case made it clear that this argument has limits (though, I believe, is not gone). Relying on a declaration to show that the references would not have been combined requires more than showing that the benefits of the primary reference would not be present in the claimed result. Furthermore, if the references indicate a short and easy path to get to the claimed result, such as modifying result-effective variables to achieve benefits in the secondary reference, attacking the reason to combine is likely more difficult now. This case highlights the difficulties in using declarations to attack reasons to combine references. A tip for practitioners is to try to differentiate the rejected claims from the references in a way that cannot be found in any of the references.